Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
This Office Action fully acknowledges Applicant’s remarks filed on January 27th, 2026. Claims 1-5, 9-13,16-18, and 20-22. Claims 6-8, 14, 15, and 19 are canceled. Claims 21 and 22 are newly added.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 27th, 2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: The article “a” preceding “phosphonic” should be removed so as to provide a grammatically correct recitation. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9-13, 20, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims read on the fluorescent probe in naturally occurring compositions of calcium and HAP.
Further, the claimed “composition” is not a composition as the fluorescent probe is not substance and claiming calcium does not fall within the composition of matter requirements, and thus the claims are not drawn to a statutory category of invention. This likewise follows in dependent claims 10-13, 20, and 21.
See also MPEP 2106.03-
A composition of matter is a "combination of two or more substances and includes all composite articles." Digitech, 758 F.3d at 1348-49, 111 USPQ2d at 1719 (citation omitted). This category includes all compositions of two or more substances and all composite articles, "'whether they be the results of chemical union or of mechanical mixture, or whether they be gases, fluids, powders or solids.'" Chakrabarty, 447 U.S. at 308, 206 USPQ at 197 (quoting Shell Dev. Co. v. Watson, 149 F. Supp. 279, 280 (D.D.C. 1957); id. at 310 holding genetically modified microorganism to be a manufacture or composition of matter).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 5, 16-18, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The metes and bounds of the sought fluorescent probe and the fluorescent core provided herein is indefinitely defined.
Claim 1, as amended, provides a conditionally-defined fluorescent core by way of the metal binding functional group (1. Phosphonic acid diesters, 2. Arsonic acid group), and including a particular Markush group connected to choice 2 and the fluorescent core.
By this, the metes and bounds of the fluorescent core sought in claims 2 and 5 are indefinitely defined, and also appear to be potentially drawn to an improperly further limiting recitation to that of claim 1.
The initial claim construction of claim 1 in which the fluorescent core is provided in a conditional fashion does not itself to clear metes and bound as in claim 5, and wherein a particular choosing of the metal binding functional group among choices 1., 2. is not particularly set forth to then correlate and assign its particular fluorescent core therewith.
Further, the Markush group provided as it pertains to the arsonic acid group appear to be all drawn to organic fluorescent compounds (and noting the “consisting of” language excludes moieties, combinations of compound and moiety).
Likewise issues of clarity pervade into claims 16-18 which appear both redundant to that provided by the proviso of claim 1 and also is incongruent with the claims themselves that have been set-up for the cited conditionally-provided fluorescent core.
The claims present interfering and cross-contaminated hybrid-type embodiments and combinations/multiples of fluorescent cores to the probe itself that are indefinitely understood herein and in view of the specification.
Clarification is required.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The metes and bounds of the fluorescent probe and the number and type of metal binding functional groups are indefinitely defined herein.
Claim 4 presents these “at least two, three…” metal binding functional groups as a further element to the probe of claim 1.
Claim 1 establishes one or more metal binding functional groups and being covalently linked sp2-carbon atom of the fluorescent core.
By this, the previous recitation provided the added stipulation to those metal binding groups as in claim 1 that were drawn to one or more to be further specified as two or more.
Herein, as amended, the recited two or more metal binding functional groups in cl. 4 are further elements to that of the probe of claim 1, and thereby the structural/functional relationship of such two more metal binding functional groups is indefinitely defined.
For example, are these two or more metal binding functional groups bound to another particular carbon atom of the fluorescent core?
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The metes and bounds of the sought composition are indefinitely defined herein. Clam 10 presents that added element of a “fluorophore that exhibits…” to that of the probe, however, such fluorophore is absent any structural/functional relationship within the fluorescent probe.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 16-18, and 22 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Mayer-Cumblidge et al (US 2008/0254546), hereafter Mayer
With regard to claim 1, Mayer discloses a fluorescent probe comprising one or more metal binding functional group, including preferably as in arsonic acid group (linked in a pi-system (i.e. sp2-system), a fluorescent core (as in indocyanine dye-based and being an organic fluorescent compound, or as in xanthene-based fluorophore moiety as in cls. 1/2), and wherein the one or more functional group (and as in at least two…as in cl. 4) is covalently linked to the sp2-carbon atom of the fluorescent core (abstract, pars.[0007-0010,0018-0022,0033,0044],claims 1-15, for example).
With regard to claims 16 and 17, as best understood, Mayer discloses biarsenical probes with indocyanine dye-based (i.e. cyanine derivative) which are tetrapyrrole derivatives. Further, as in cl. 18, as best understood, as discussed above, Mayer discloses the fluorescent core as an organic fluorescent compound as in a xanthene-derivative. Further, as in cl. 22, as best understood, Mayer discloses fluorescein based fluorophore moieties (par.[0019], for example).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer in view of by Odobel et al. (Porphyrin dyes for TiO2 sensitization, Royal Society of Chemistry, 2003, Vol. 13, pg. 502-510), hereafter Odobel.
Mayer has been discussed above.
Mayer does not specifically disclose wherein the fluorescent core is selected from the group consisting of BODIPY-PPA, p-H8TPPA, m-H8TPPA as in cl. 5.
With regard to claim 1, Odobel discloses a fluorescent probe comprising one or more metal binding functional group, and, a fluorescent core as in cl. 5 p-H8TPPA, or m-H8TPPA (abstract, Table 1, page 507, for example).
It would have been obvious to one of ordinary skill in the art to modify Mayer to utilize a fluorescent core as in p-H8TPPA, or m-H8TPPA such as taught by the analogous prior art of Odobel to a similar fluorescent probe wherein utilizing p-H8TPPA, or m-H8TPPA representative an obvious to try analogue as another and suitable form of a fluorescent core to that of the cyanine or xanthene-based fluorescent core that would have a reasonable expectation of success therein for a likewise desired fluorescent probe functionality.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, namely Odobel and Mayer, does not teach or fairly suggest wherein the one or more metal binding functional group is the phosphonic acid diesters containing -PO(OR)2 groups, where R is alkyl or aryl. Odobel discloses a fluorescent probe comprising phosphonic acid groups, but which does not teach or suggest phosphonic acid diesters containing -PO(OR)2 groups, where R is alkyl or aryl. Mayer is drawn to a fluorescent probe comprising an arsonic acid group, and does not teach or suggest phosphonic acid diesters containing -PO(OR)2 groups, where R is alkyl or aryl.
Response to Arguments
Applicant's arguments filed January 27th, 2026 have been fully considered but they are not persuasive.
Applicant asserts that the claims have been amended to obviate the prior rejection of claims 1-20 under 35 USC 112 b, 2nd paragraph.
Examiner asserts that this is partially found, however, claims 2, 5, 16-18, and 22, 4, and 10, as amended, are indefinitely defined for the particular reasons discussed above in the body of the action.
With regards to claims 1-5, 9-13, 16, 17, 19, and 20 rejected under 35 USC 102a1 as being anticipated by Odobel, Applicant traverses the rejection.
The rejection has been removed in view of the amendments to the claims.
With regards to claims 1, 2, 4, 9-13, 16-18, and 20 under 35 USC 102a1 as being anticipated by Mayer, Applicant traverses the rejection.
Applicant assert that Mayer does not teach or suggest the amended recitation of claim to “with the proviso…” and Mayer is wholly silent as to the arsonic acid group constituents recited herein.
Examiner asserts that Mayer remains to disclose one or more arsonic acid groups and “with the proviso…and xanthene and derivatives thereof” in which Mayer commensurately discloses as in a xanthene-based fluorophore moiety (par.[0019], for example).
As discussed above, claims 1, 2, 4, 16-18, and 22 are rejected under 35 USC 102a1 as being anticipated by Mayer.
Further, as discussed above, and as best understood herein (see above-discussed rejections of the claims under 35 USC 112 b/2nd), claim 5 is herein rejected under 35 USC 103 as being unpatentable over Mayer in view of Odobel for those reasons discussed above in the body of the action.
Further, in view of the amendments to the claims, claims 9-13, 20, and 21are rejected under 35 USC 101 for the reasons discussed above in the body of the action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEIL N TURK/Primary Examiner, Art Unit 1798
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